Presidio Amenities Maintenance Association, Inc.

Trademark Trial and Appeal Board

Aug 5, 2020

88306847 (T.T.A.B. Aug. 5, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Presidio Amenities Maintenance Association, Inc.
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Serial No. 88306847
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Michael S. Sherrill of Sherrill Law Offices, PLLC,
for Presidio Amenities Maintenance Association, Inc.
John Salcido, Trademark Examining Attorney, Law Office 122,
Kevin Mittler, Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge,
and Lykos and Hudis, Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Presidio Amenities Maintenance Association, Inc. (“Applicant”) seeks registration
as a collective membership mark on the Principal Register the mark PRESIDIO (in
standard characters) for “indicating membership in an association of companies doing
business within the physical boundaries of a planned real estate development
community” in International Class 200.1

1 Application Serial No. 88306847 filed on February 19, 2019, under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and first use in
commerce since at least as early as October 25, 2017. According to the application, “Applicant
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The Trademark Examining Attorney refused registration on the grounds that: 1)
the PRESIDIO mark (as depicted in the Application drawing) is not a substantially
exact representation of the mark as used in commerce on the specimen; and 2) does
not show the PRESIDIO mark in use in commerce to indicate membership in a
collective membership organization in International Class 200, within the meaning
of Trademark Act Sections 1, 2, 4 and 45, 15 U.S.C. §§ 1051-1052, 1054, 1127. After
the Trademark Examining Attorney made the refusal final, Applicant appealed to
this Board. Applicant and the Examining Attorney filed briefs. We affirm the refusal
to register.
I. The Application Drawing, and the Filed Specimen
With the Application, Applicant submitted a specimen of use described as a
“website of [a] member indicating membership in [A]pplicant’s association.”2 Below
and to the left is the mark as presented on the drawing page of the Application. Below
and to the center and right is the mark as shown on the specimen.

controls the use of the mark by the members as specified in the applicant’s bylaws or other
written provisions.”
2 Application of February 19, 2019 at TSDR 2. Page references herein to the application
record refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In
re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the
briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE
designation is the docket entry number; and after this designation are the page references, if
applicable.

Serial No. 88306847
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Mark as shown in Drawing
Mark as shown on Mark as shown in
website Masthead website text
What follows is the advertising text presented on the website specimen.

II. Whether Applicant’s Mark in the Drawing is a Substantially Exact
Representation of the Mark Shown in the Specimen of Use
Applicant filed the PRESIDIO Application based on its alleged use of the mark in
commerce. Trademark Act Sections 1(a)(1) and 1(a)(4), 15 U.S.C. §§ 1051(a)(1) and
1051(a)(4), in relevant part, provide:
(a) (1) The owner of a trademark used in commerce may request
registration of its trademark on the principal register … by … filing in
the Patent and Trademark Office an application …, a verified statement,
… and such number of specimens … of the mark as used as may be
required by the Director.
* * *
(4) The applicant shall comply with such rules or regulations as may be
prescribed by the Director.
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Trademark Rule 2.51(a), 37 C.F.R. § 2.51(a) states: “[i]n an application under section
1(a) of the [Trademark] Act, the drawing of the mark must be a substantially exact
representation of the mark as used on or in connection with the goods and/or
services.” (Emphasis added).
The drawing in an application under of the Trademark Act Section 1(a) must be
the complete mark, as evidenced by the specimen. When the representation on a
drawing does not constitute a complete mark, it is sometimes referred to as a
“mutilation” of the mark; in other words, an essential and integral subject matter is
missing from the drawing. An incomplete mark may not be registered. TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.12(d)
(October 2018); see also In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828,
1830 (Fed. Cir. 1988) (“The three elements of the [composite mark] … are interrelated
elements of a single unified design. … [T]hese elements constitute ‘a unitary mark
which creates a single commercial impression and that to try to separate out the [one]
… portion of the mark results in an impermissible mutilation.’”).
On the other hand, in a Trademark Act Section 1 application, an applicant has
some latitude in selecting the mark it wants to register. The mere fact that two or
more elements form a composite mark does not necessarily mean that those elements
are inseparable for registration purposes. An applicant may apply to register any
element of a composite mark if that element presents, or will present, a separate and
distinct commercial impression apart from any other matter with which the mark is
or will be used on the specimen, i.e., the element performs a trademark function in
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and of itself. See, e.g., In re Univ. of Miami, 123 USPQ2d 1075, 1078 (TTAB 2017)
(finding that the depiction of the mark in the drawing as a personified ibis wearing a
hat and sweater created a separate and distinct commercial impression from literal
elements that appeared on the hat and sweater in the specimens of use and thus the
mark drawing was a substantially exact representation of the mark as used). But see
In re Pharmavite LLC, 91 USPQ2d 1778, 1782 (TTAB 2009) (mark comprised of the
design of two bottles properly refused, finding that it does not create a separate and
distinct commercial impression apart from the mark shown on the specimen and
further that it is not a substantially exact representation of the mark shown on the
specimen).
Applicant and the Examining Attorney argue over the applicability of In re Big
Pig, Inc., 81 USPQ2d 1436, 1440 (TTAB 2006),3 holding that the word PSYCHO as it
appeared on the specimen in that appeal was registrable – as it was separate and
apart from the other text and design features appearing on the specimen, as the word
PSYCHO created a separate and distinct commercial impression which indicated the
source of the applicant’s goods. “The essential issue here [, however,] is whether the
alleged mark in [A]pplicant’s drawing creates a distinct commercial impression
separate and apart from the [other] words and design[] appearing … [in the specimen
made of record]. Consequently, we do not find … [that] case[] particularly helpful …
[on] this … [appeal].” In re Pharmavite, 91 USPQ2d at 1782.

3 Applicant’s Brief, 4 TTABVUE 3-4; Examiner’s Brief, 6 TTABVUE 11.
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We consider first Applicant’s mark as shown on the masthead of Applicant’s web
page specimen:

Here, PRESIDIO appears as a part of a logo – the literal portion of which is written
as “AUSTIN M TEXAS THE MICHAEL AT PRESIDIO” where the letter “M” appears
within a shaded circle, and the wording “THE MICHAEL” appears in a different font
from the wording “AT PRESIDIO”, appearing in a smaller stylized script. In this
presentation, “PRESIDIO” is set apart from the rest of the logo, but the wording set
apart by stylization is “AT PRESIDIO.”4 However, the drawing in the Application
displays the mark as the single word “PRESIDIO” alone in standard characters. Thus
“PRESIDIO” is not a substantially exact representation of “AT PRESIDIO” as shown
on the masthead of the submitted web page specimen.
We next consider Applicant’s mark as shown within the text of Applicant’s web
page specimen:
Here, PRESIDIO appears within the phrase “THE MICHAEL AT PRESIDIO.” In this
presentation, “PRESIDIO” is not set apart from the rest of the phrase, by stylization
or otherwise. Thus “PRESIDIO” is not a substantially exact representation of “THE
MICHAEL AT PRESIDIO” as shown within the text of the submitted specimen.
We therefore find that the PRESIDIO standard character mark (as depicted in the
Application drawing) is not a substantially exact representation of the mark as used
in commerce on the specimen.

4 Applicant concedes as much. Applicant’s Reply Brief, 7 TTABVUE 3.
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III. Whether Applicant’s Website Specimen Shows Applicant’s Mark in
Use in Commerce to Indicate Membership in a Collective
Trademark Act Section 4, 15 U.S.C. § 1054, in relevant part, states:
Subject to the provisions relating to the registration of trademarks, so
far as they are applicable, collective … marks, including indications of
regional origin, shall be registrable under this chapter, in the same
manner and with the same effect as are trademarks …, and when
registered they shall be entitled to the protection provided … in the case
of trademarks …. Applications and procedure under this section shall
conform as nearly as practicable to those prescribed for the registration
of trademarks.
The definition of a “collective mark” under Trademark Act Section 45, 15 U.S.C. §
1127, provides:
The term “collective mark” means a trademark or service mark—
(1) used by the members of a cooperative, an association, or other
collective group or organization, or
(2) which such cooperative, association, or other collective group or
organization has a bona fide intention to use in commerce and applies
to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association,
or other organization.
If the application is based on use of the mark in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), a collective mark application must include a
“specimen showing how a member uses the mark in commerce.” Trademark Rule
2.44(a)(4)(i)(C), 37 C.F.R. § 2.44(a)(4)(i)(C). The owner of a collective membership
mark exercises control over the use of the mark but does not itself use the mark to
indicate membership. See Zimmerman v. Nat’l Ass’n of Realtors, 70 USPQ2d 1425,
1428 (TTAB 2004) (“the purpose of a collective membership mark would be merely to
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indicate that the user of the mark is a real estate agent who is a member of the
collective organization and who has met NAR's standards for admission.”).
Rather, “[a] collective membership mark specimen must show use by members to
indicate membership in the collective organization.” Trademark Rule 2.56(b)(4), 37
C.F.R. § 2.56(b)(4); see also In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ
343, 345 (TTAB 1983) (“[P]roper specimens to support registration of a collective
membership mark must show the mark sought to be registered used by members to
indicate membership.”). Examples of acceptable specimens for collective membership
marks include membership cards or certificates, decals, wall plaques, garment
patches, flags, pennants, banners, business stationery, clothing, and any other item
used by a member to indicate membership in an applicant’s organization. See TMEP
§ 1304.02(a)(i)(C).
The sole purpose of a collective membership mark is to indicate that the user of
the mark is a member of a particular organization, not to identify and distinguish
any goods or services. Daimler-Benz AG v. Consulting Eng’rs Council, 353 F.2d 539,
147 USPQ 528, 530 (CCPA 1965); In re Int’l Inst. of Valuers, 223 USPQ 350, 350
(TTAB 1984). Where the specimen “submitted to support registration … contains no
hint that … [Applicant’s mark] is used as a membership mark and, indeed, suggests
a clearly different use[,]” a refusal to register the mark as a collective membership
mark is proper. In re Institute for Certification of Comput. Prof’ls, 219 USPQ 372, 373
(TTAB 1983).
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Applicant argues that “[t]he [collective membership] specimen need only show use
by a member as opposed to the collective organization, and indicate membership in
the collective organization.”5 With this statement we agree. However, Applicant
further contends that:
The members of applicant, as identified in the application, are
“companies doing business within the physical boundaries of a
planned real estate development community”. Since membership
in the PRESIDIO organization inherently indicates a physical presence
within a very particular planned real estate development community,
members will indicate membership in PRESIDIO not just by displaying
insignia bearing PRESIDIO but by prominently announcing that they
are located in the only planned real estate development community
where PRESIDIO members exist. (Emphasis by Applicant).6
With this contention we do not agree. To the contrary, we agree with the
Examining Attorney that “[t]he [web page] specimen fails to convey any information
about the existence of applicant’s collective or that the entity offering the apartment
services would be a member of such a collective. Rather, it seems to be used as nothing
more than a service mark for the rental of apartments.”7 The following exemplary
statements from the web page specimen, which appear to be an advertisement for
real estate rental services, support our determination that Applicant’s proposed mark
is not being used as a collective membership mark:
The Michael at Presidio is a modern apartment community, located in a booming northwest
Austin neighborhood, rivaled in beauty only by its breathtaking setting.
* * *
Lustrous fixtures and rich textures refine every studio, one, and two bedroom apartment
and three bedroom townhome at The Michael at Presidio.

5 Applicant’s Brief, 4 TTABVUE 4.
6 Id. at 6.
7 Examiner’s Brief, 6 TTABVUE 9.
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* * *
In addition to a home that exceeds your elevated standards, The Michael at Presidio offers
amenities designed to enhance and refresh your lifestyle. The community achieves the
perfect balance between urban chic and countryside retreat ….8
Nothing quoted above, or for that matter anywhere in Applicant’s specimen, suggests
that Applicant’s mark is being used by members of Applicant’s identified collective
organization to indicate membership “in an association of companies doing business
within the physical boundaries of a planned real estate development community.”
Applicant’s further argument that “it is customary for members to indicate
membership in the organization to their customers and prospective customers by
displaying the member’s business name in close proximity with the collective
membership mark” misses the point.9 The second ground for the Examining
Attorney’s refusal was not proximity of the applied-for mark, PRESIDIO, to the
business name of a member, THE MICHAEL. The refusal was issued because
nowhere on the specimen made of record does the member indicate it is a part of
Applicant’s collective.
IV. Conclusion
The Examining Attorney’s refusal to register the PRESIDIO mark on both
grounds was correct. The PRESIDIO mark (as depicted in the Application drawing)
is not a substantially exact representation of the mark as used in commerce on the
specimen. Moreover, the specimen does not show the PRESIDIO mark in use in
commerce as a collective membership mark to indicate membership in a collective

8 Application Specimen of Use of February 19, 2019 at TSDR 10-11.
9 Applicant’s Reply Brief, 7 TTABVUE 3-4.
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membership organization. Trademark Act Sections 1, 2, 4 and 45, 15 U.S.C. §§ 1051-
1052, 1054, 1127.
Decision:
The refusal to register Applicant’s mark PRESIDIO is affirmed.